A patent applicant successfully argued a theory of the IP-nullifying effect of a force majeure in a petition to revive a patent application that became abandoned for failure to respond to an Office Action. The force majeure precluded a meaningful market in the U.S. for the invention and thus rendered any patent protection meaningless, so that applicant’s non-response to the Office Action did not intentionally abandon any meaningful patent protection. When the basis for the force majeure apparently ended, the applicant successfully revived the patent application.

Full details of the successful argument, in an apparent case of first impression handled by the present author, are contained in U.S. Application of S. Piperidis, No. 10/537,183 (now U.S. Patent 7,866,842), available from the U.S. Patent and Trademark Office website, www.uspto.gov, under the Public Pair portal to the Image File Wrapper of the foregoing patent. Practitioners before the U.S. Patent and Trademark Office preparing petitions to revive an abandoned patent application, under 37 CFR § 1.137(b), or to revive an abandoned trademark application, under 37 CFR § 2.66, should consider whether a force majeure occurred in similar circumstances.

Facts re abandonment in Application of S. Piperidis, No. 10/537,183

The facts concerning abandonment of U.S. Application of S. Piperidis, No. 10/537,183, were as follows. The application became abandoned when a 2006 Office Action was not responded to within six months, resulting in abandonment of the application under 35 U.S.C. § 133. Applicant decided not to respond to the Office Action due to the patent-nullifying effect of an Underwriters Laboratory (UL) decision to refuse safety certification of the invention. More specifically, Applicant testified in a declaration that: “As discussed above, [non-response] is because the potential property right was, for practical purposes, eviscerated by UL’s refusal in 2006 to certify the safety of the [inventive] reflector.”  In support of this statement, Applicant testified that without a UL safety certification, the market for the invention was far too miniscule to engender the exclusionary power of a patent.

But for UL’s intervening patent-nullifying decision, Applicant wanted to pursue the present application and to timely respond to the mentioned 2006 Office Action. Substantiating Applicant’s desire to pursue the present application were the following facts:

1. Applicant believed that the claims of the subject application were patentable over the prior art cited in the 2006 Office Action and were of adequate scope to justify the expense of pursuing the application.
2. Applicant believed that the market demand for the invention was consistently strong throughout all relevant time periods, that is, including the period from the 2006 date of the Office Action to which a response was not timely filed, and continuing through the filing of the 2009 petition to revive the subject application.
3. At all relevant times as just mentioned, Applicant was ready, able and willing to pay for pursuing the subject application but for the intervening patent-nullifying decision of Underwriters Laboratory.

Spurring the Applicant’s desire to revive the application in 2009 was the fact that, by then, it had serendipitously determined that sales of the invention outside of the U.S.A. had resulted in sufficient safety data to enable it to re-approach Underwriters Laboratory and seek a favorable decision on safety certification.

Patent Office Initial Refusal to Revive Application

            The Patent Office initially refused to revive the application, taking the position that “[a] delay resulting from a deliberately chosen course of action on the part of the applicant is not an “unintentional” delay within the meaning of 37 CFR § 1.137(b).” PTO Decision on Petition dated July 17, 2009 (hereinafter, “Initial Decision”). In support of this position, the Patent Office cited In re Application of G, 11 USPQ2d 1378, 1380 (Comm’r Pat. 1989) for the proposition that: “Where the applicant deliberately permits an application to become abandoned (e.g., due to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot be overcome, or that the invention lacks sufficient commercial value to justify continued prosecution), the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of  37 CFR § 1.137(b).” Initial Decision. The Patent Office also cited In re Maldague, 10 USPQ2d 1477, 1478 (Comm’r Pat. 1988), for the proposition that “[a]n intentional course of action is not rendered unintentional when, upon reconsideration, the applicant changes his or her mind as to the course of action that should have been taken.”

Applicant’s Successful Renewed Petition to Revive

The gist of the Applicant’s successful petition to revive the application is represented in the following table, which was presented in its renewed petition. The first category (1) of the table relates to an applicant’s decision not to respond based on an (unreasonable) mistake concerning patentability of the claims, and is based on In re Application of G, 11 USPQ2d 1378 (Comm’r Pat. 1989) and In re Maldague, 10 USPQ2d 1477 (Comm’r Pat. 1988), cited in the Initial Decision on Petition.  With such decisions not to respond to an office action based on a conscious determination of lack of patentability, Applicant argued that such actions logically support the inference of intent to abandon an application.

Jumping to the third category (3) in the above table, consider an applicant being held at gunpoint on the last day to respond to an office action. The applicant decides (deliberately) not to respond to the office action since his life will be jeopardized if he takes actions to respond to the office action. While applicant’s course of action was clearly a consciously (i.e., deliberately) chosen course of action, it would be illogical in this category to infer from this fact alone that applicant possessed the intent to abandon the application.

Applicant also dealt point-by-point with other reasons raised in the Initial Decision, essentially as follows, with the Patent Office’s other reasons for holding a delay to be intentional reproduced in bold:

1. “[A] conclusion that * * * the invention lacks sufficient commercial value to justify continued prosecution.” In fact, Applicant was well-aware during all relevant time periods involved, that is, from before the 2006 Office Action to which a response was not timely filed, continuing through the filing of the 2009 petition to revive the subject application, that the market demand for the invention had remained strong, and therefore the invention possessed sufficient commercial value to justify continued prosecution. In fact, Applicant was ready, able and willing to timely respond to the outstanding 2006 Office Action but for UL’s intervening patent-nullifying force majeure decision.
2. “[A]n applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office Action.”  In fact, Applicant did consider the claims be patentable over the references relied on in the 2006 Office Action.
3. “[T]he applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent.”  In fact, Applicant did consider the probable claims that would be allowed to be of sufficient breadth or scope to justify the financial expense of obtaining a patent.
4. “[T]he applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining a patent.” In fact, Applicant did consider the probable claims that would be allowed to be of sufficient breadth or scope to justify the financial expense of obtaining a patent.
5. “[T]he applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining a patent.” In fact, Applicant did consider the probable claims that would be allowed to be of sufficient value to maintain an interest in obtaining a patent.
6. “[T]he applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.”  In fact, Applicant was ready, able and willing to timely pay patent fees and patent prosecution expenses but for UL’s intervening patent-nullifying force majeure decision.
7. “[A] change in circumstances that occurred subsequent to the abandonment of an application does not render “unintentional” the delay resulting from a previous deliberate decision to permit an application to be abandoned. It is true that Applicant made the “serendipitous” determination that sales of the invention outside of the U.S.A. had resulted in sufficient safety data in 2009 to enable it to re-approach Underwriters Laboratory and to seek a favorable decision on safety certification. However, the foregoing concern of the Patent Office relating to a “change of circumstances” arises only after a finding that abandonment of the application was intentional. Because this renewed Petition to Revive Application showed that the application was abandoned unintentionally, there is no need to reach the “change of circumstances” issue.

Conclusion

            Revival of an abandoned U.S. patent or trademark application may be available to an applicant when a force majeure renders the intellectual property (IP) meaningless by foreclosing the U.S. market for commercial exploitation of the IP.

© 2012 Bruzga & Associates

Before a U.S. trademark registration may issue, a trademark applicant must normally use the trademark in U.S. commerce (i.e., commerce between States or with a foreign country). This requirement can be bypassed by relying on a foreign registration from most other countries, and also asserting an intention to use the mark in U.S. commerce, pursuant to § 44(e) of the Lanham Act, or § 66(a) of the Lanham Act if based on the Madrid Protocol. (The Lanham Act is codified as 15 USC §§ 1051 et seq., but all section references below refer to the Lanham Act.)  But, the following discusses three perils of such reliance on foreign registrations.

1. Demonstrable bona fide intent to use the mark. As is the more common case when filing a § 1(b) intent-to-use application, under either § 44(e) or § 66(a) an applicant must verify in writing that it has a “bona fide intention” to use a trademark in U.S. commerce. An applicant does not possess a “bona fide” intent to use a mark based merely on a desire to reserve the right to register a mark. The applicant must possess a demonstrable intent to use the mark in U.S. commerce. For example, in response to discovery requests in Honda Motor Co., Ltd v. Friedrich Winkelmann (Opposition No. 91170552) (TTAB April 2009) concerning a registration under § 44(e), the losing trademark applicant, on the one hand, asserted that “he had a bona fide intent to use the mark * * * on the day the application was filed,” but, on the other hand, was unable to identify any evidence supporting such asserted bona fide intent, and, moreover, admitted that it “has not had activities in the U.S. and has not made or employed a business plan, strategy, arrangements or methods there” and “has not identified channels of trade that will be used in the United States.” Reliance on a foreign registration will not excuse the need to have a demonstrable basis for a bona fide intent to use a mark in U.S. commerce on the day when the trademark application is filed.

2. Defects in foreign registration can doom U.S. application.  The U.S. registration is doomed if ownership of the foreign registration is deficient for any of a number of reasons, such as the U.S. applicant not being identical to the foreign registration owner on the date the U.S registration is to issue, or for deficiency in a foreign registration. In In re Fisons Limited, 197 USPQ 888 (TTAB 1978), the Trademark Trial and Appeal Board stated, “if at any time prior to the issuance of the certificate of registration by the Patent and Trademark Office the foreign applicant divests itself or is divested of the registration of the mark in the applicant’s country of origin, the foundation for registration under Section 44 of the Act falls and registration, if § 44 is the only basis therefor, must be refused.”  Further, in defending against an opposition to register BITZ KIDS for children’s clothing, in The Ritz Hotel v. FO USA (Opp. No. 91,188,728) ( 2009), the applicant raised the deficiency of THE RITZ KIDS mark being based on a French registration that had lapsed before the issuance of the § 44(e)-based U.S. registration of the same mark. In response, the Registrant of THE RITZ KIDS mark immediately surrendered its registration under § 7 and withdrew its opposition with prejudice.  Doom for a U.S. application based on the Madrid Protocol under § 66(a) may, however, be avoided when cancellation or invalidity of the underlying foreign (“basic”) registration invalidates the international Madrid registration within the first five years of the international registration.  Thus, under § 70(c), within three months of cancellation of the international registration, the owner may transform the § 66(a)-based U.S. application into a § 1 or § 44 application, which will have the filing date of the international application and retain any previously enjoyed priority.  In any event, a U.S. applicant should take extra precautions to assure that a valid foreign registration can be properly relied upon.

3. Use in U.S. commerce should commence promptly.  Even if the foregoing concerns (1) – (2) are overcome, the registrant of a trademark must still demonstrate use of the mark under § 8, or § 71(a) if based on the Madrid Protocol, between the fifth and sixth years after registration to maintain the registration.  Alternatively, the registrant will need to show that any nonuse of the mark is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.  In this connection, non-use of the mark for three consecutive years constitutes prima facie abandonment of the mark (§ 45), and showing special circumstances to justify non-use of a mark requires substantial (i.e., non-trivial) evidence.  For instance, in In Rivard v. Linville, 133 F.3d 1446, the court stated that in order to prove excusable nonuse, “the registrant must produce evidence showing that, under his particular circumstances, his activities are those that a reasonable businessman, who had a bona fide intent to use the mark in United States commerce, would have undertaken.”  The Court upheld the TTAB’s finding that evidence of “sporadic trips to the U.S., cursory investigations of potential sites for salons” that were to use defendant’s registered trademark, and “half-hearted attempts to initiate the business relationships necessary to open a salon” were insufficient to support an intent to commence use of the mark nor were they sufficient to show that the nonuse of the mark during the period was reasonable.  Linville at 1449.  Thus, despite bypassing the need to use a trademark in U.S. commerce to obtain a registration, a trademark owner should still rather promptly use the mark in U.S. commerce after registration.

Conclusion

An applicant for U.S. trademark registration who wishes to rely on a foreign registration to temporarily bypass the need to use the mark in U.S. commerce before registration in the U.S. (1) should do so only after careful consideration of the validity of the foreign registration, (2) should be able to show a demonstrable intent to use a trademark on the day an application is filed, and (3) should nevertheless rather promptly proceed to use the mark in U.S. commerce after registration.

PPH will permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country. Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.

“The PPH pilot program is a prominent landmark of the continuous deepening of bilateral patent cooperation between the SIPO and the USPTO,” said Commissioner Tian. “Patent applicants and stakeholders in both countries will benefit from the fast track examination provided by the PPH pilots. These PPH pilots will also effectively improve the capabilities of both offices to handle workloads, thereby promoting technology innovation and economic development in both countries through enhanced patent examination efficiency and quality.”

“These PPH pilots mark a significant milestone of achievement in patent cooperation between our two offices,” said Under Secretary Kappos. “They will promote high quality patents and expedite processing of patent applications in both offices by avoiding duplicative work and will provide greater costs savings to patent applicants, helping to spur greater innovation and generate greater economic growth and job creation in both countries.”

Under the Patent Prosecution Highway, an applicant receiving a ruling from the State Intellectual Property Office that at least one claim in an application is patentable may request that the USPTO fast track the examination of corresponding claims in corresponding applications. Similarly, if the USPTO determines that at least one claim is patentable, the applicant may request accelerated processing of corresponding applications filed at the State Intellectual Property Office. Full requirements for participation in each trial program at the USPTO can be found at http://www.uspto.gov/patents/init_events/pph/index.jsp. Information on the State Intellectual Property Office’s program may be found at http://www.sipo.gov.cn/ztzl/ywzt/pph/

The one year pilot programs will end on November 30, 2012. Both offices may extend the one year trial period upon mutual agreement. The purpose of this trial program is to gauge the interest of applicants and to evaluate the programs for patent quality, efficiency and the reduction of the workload at the USPTO as well as SIPO.

For non-press inquiries contact Magdalen Greenlief at 571-272-8850 or at Magdalen.Greenlief@uspto.gov.

Dated: November 22, 2011.
David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
[FR Doc. 2011-30717 Filed 11-28-11; 8:45 am]

WASHINGTON ─ In tribute to the tremendous influence of Steve Jobs, the United States Patent and Trademark Office (USPTO) will showcase The Patents and Trademarks of Steve Jobs: Art and Technology that Changed the World. The free exhibit will open to the public on November 16 at the USPTO’s campus in Alexandria, Virginia.

“This exhibit commemorates the far-reaching impact of Steve Jobs’ entrepreneurship and innovation on our daily lives,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace.”

Located in the atrium of the Madison Building, the exhibit features more than 300 of the patents that bear the name of the iconic innovator along with many of the trademarks that have given Apple its instantly recognizable identity around the world. The display gives insight into the visionary commitment Jobs gave to each of the products and designs he influenced during his time with Apple, the company he co-founded at the age of 21 with his friend and fellow computer enthusiast Steve Wozniak.

The exhibit was created and designed by Invent Now, Inc., the non-profit organization dedicated to fostering invention and creativity through its many programs and which runs the National Inventors Hall of Fame and Museum also found on the USPTO campus in the Madison Building. The Jobs exhibit, which runs through January 15, 2012, is free and open to the public, as is the National Inventors Hall of Fame and Museum. The museum, located at 600 Dulany Street in Alexandria, is open Monday through Friday from 9am to 5pm and Saturday from 12n to 5pm (closed Sundays and Federal holidays). For more information about the USPTO, visit www.uspto.gov. For more information about Invent Now, visit www.invent.org.

To stay current with the USPTO, subscribe to regular e-mail updates at www.uspto.gov/subscribe.

available at http://www.uspto.gov/inventors/independent/eye/201112/aiaupdate.jsp

by Richard Maulsby : Associate Commissioner for Innovation Development

As always, the devil is in the details. That has been the challenge for the United States Patent and Trademark Office (USPTO) during the past two months as the agency began implementing the various rulemakings, studies and programs mandated by the American Invents Act. The agency has also launched an extensive public outreach effort featuring webinars, speaking engagements across the country, and continual updates of the America Invents Act Implementation Guide on USPTO.gov.

To date, the agency has met all deadlines established by the legislation and is on track to meet all of its obligations during the first year of the law’s existence.

Several items are of particular interest to the small entity inventor community. The pro bono program requirement of the America Invents Act is already up and running in Minneapolis as a pilot and plans are well underway to expand the pro bono program to other cities throughout the country during the next year. The USPTO is also participating in a task force with Chief Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit and members of the patent bar. The task force is seeking ways to expand the pro bono program throughout the United States.

Secondly, the American Invents Act requires the USPTO to conduct an international patent protection study and complete it by mid-January 2012. The agency published a Federal Register notice in October seeking comments and held two public hearings. A transcript of the hearings and all of the written comments has been posted online. The USPTO will publish its report based on the public feedback and independent research in January.

Finally, on November 15, the financial incentive for filing patent applications electronically went into effect. From that date on, all applicants who file paper applications will pay a $400 surcharge, reduced to $200 for small entity filers. Regardless of the incentive, everyone should want to file electronically anyway. The system offers inventors the opportunity to file patent applications and other patent documents in a fraction of the time and at substantially less cost than paper filings. Inventors forgo printing, postage and courier costs, and receive immediate notification that submissions have been received. 93 percent of filers use the electronic system.

The Office of the Associate Commissioner for Innovation Development made four presentations on the America Invents Act at independent inventor meetings in Texas and California in October. Plans are being made for additional presentations throughout the country in 2012. In addition, the office will devote the January online inventors chat to the status of the law’s implementation. To keep up-to-date on all the latest developments regarding the America Invents Act, all readers of Inventors Eye should visit the USPTO America Invents Act Implementation Guide regularly.

On May 6, 2011, the USPTO announced the Full First Action Interview Pilot Program, an extension and expansion of the Enhanced First Action Interview Pilot Program.

Prior to First Office Action. The program provides applicants the right to discuss certain applications prior to the first Office Action on the merits.  Previously, an applicant needed the examiner’s permission before engaging the USPTO at that stage.

To be eligible, the application must contain:

• Three or fewer independent claims;
• Twenty or fewer dependent claims; and
• No multiple-dependent claims.

Examiner Preparation.  If the applicant exercises his or her rights, the examiner will conduct a prior art search and provide a Pre-Interview Communication, citing relevant prior art and identifying proposed rejections and/or objections.  After receipt, applicant may file a request to not have a first-action interview.

Applicant Preparation.  If the applicant wishes to continue, within thirty days of receipt of the Pre-Interview Communication, he or she should schedule the interview and submit arguments, proposed amendments or both.  At the interview, rejections, objections, arguments, and proposed amendments may be discussed.  If agreement as to patentability is reached, the examiner issues a Notice of Allowance.  Where there is no accord, applicant is provided a first Office Action and summary of the interview.

Benefits.  The PTO cites four benefits as justification for the program:

• The ability to advance prosecution of an application;
• Enhanced interaction between applicant and the examiner;
• The opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process; and
• The opportunity to facilitate possible early allowance.

Approximately 34 percent of the applications in the prior First Action Interview Pilot Programs were allowed on the first action on the merits, as compared to approximately 11 percent on average across all technologies for new non-continuing applications.

Other Details.  There is no fee for participation in the program.  Applications subject to the program will not be advanced out of term for examination.  Rather, they will be examined with regard to their effective U.S. filing date. The Full First Action Interview Pilot Program will continue until May 16, 2012.

Bruzga & Associates recognizes that some clients may wish to participate in the program, as it may streamline prosecution of an application and create a better rapport with examiners.  Our attorneys and agents are fully capable of complying with the requirements.

For more information, contact our office at 646.278.0876 or info@aboutiplaw.com.

The America Invents Act (AIA) was passed on September 16, 2011 and is the most significant patent reform act in decades.  The Act introduces a number of significant reforms. We will go through a number of important points.

First to File

Effective March 16, 2013, the AIA implements a version of the first to file system, which replaces the first to invent system, with significant consequences. Historically, under previous U.S. patent law, the USPTO has granted priority to the inventor who is able to show that he was the first to invent. Instead, the AIA implements a version of the “first to file” system, used by patent offices in most of the rest of the world. However, the AIA provisions differ from a pure “first to file” system, where generally, an inventor’s own disclosure is an “absolute novelty bar” to the filing of a patent application. Instead, an inventor’s own disclosure, is not prior art against the claimed invention if the disclosure was made one year or less before the effective filing date of the claimed invention. Thus, this exception contrasts from a “pure” first to file system.

As a consequence, applicants cannot “swear behind” using a Rule 131 affidavit, demonstrating prior inventorship and thus, no interference proceedings are available. Instead, effective March 16, 2013, a derivation proceeding will be utilized. In such a proceeding, one must show that the claimed invention was derived from the prior inventor.

Prioritized Examination

Effective September 26, 2011, the AIA allows for a fast-track prioritized examination of a patent application, with expedited allowance of a patent application within one year of filing. Applicants will have to pay extra for this privilege. Currently, the total fees, including the Track I prioritized examination fee, are $3630 for small entities and $6480, for large entities. In addition, applicants must present no more than 4 independent claims and a total of 30 claims.

Ombudsman Program

Effective September 16, 2012, the AIA implements an ombudsman program to provide support and service to inventor and small entities, with respect to issues in patent prosecution.

New provisions available for corporations

The AIA allows a number of important provisions for corporate entities. Effective September 16, 2012, a company will able to file applications in which the inventor has assigned or is under an obligation to assign the invention to the company. Also, in a situation where an inventor cannot be found after diligent effort or is uncooperative in the execution of an oath or declaration, a company can file a substitute statement setting forth the circumstances. Furthermore, some entities, such as universities, will be classified as microentities, and qualify for a 75% reduction of fees. However, the microentity status is effective as of the date of the Act, i.e., September 16, 2011.

Patent Review

The AIA sets in place a number of procedures for review of a patent, during prosecution and after allowance. Effective September 16, 2012, third parties can submit printed publications relevant for examination of a patent application. Third parties can also request review of a patent within nine months of issuance, for possible cancellation of claim. Under such a review, third parties should set forth evidence that supports the grounds for challenging the claim. Besides third parties, patent owners themselves can request supplemental examination of their own patents.

Patent Validity

The AIA includes provisions which impact strategies for patent lawsuits. First, the AIA has eliminated the use of the failure to disclose the best mode for an invention as a manner of invalidating a patent. The best mode requirement requires the inventor to disclose the best mode (e.g., an optimal manner of using or carrying out the invention) in the specification. The AIA still requires disclosure of the best mode; however, failure to do so will no longer be enough, by itself, to invalidate an issued patent. In another example, the AIA has established prior commercial use of the claimed invention as a defense to patent infringement. Such commercial use must have occurred at least one year before the earlier of (1) the effective filing date of the patent application, or (2) the date on which the claimed invention was disclosed to the public, subject to the prior art exception for inventor’s own disclosure, as discussed earlier.

Periodic Review

Although designed to harmonize US patent law and remove frivolous patent litigation, the AIA is not without its detractors.  Some commentators have suggested that a first-to-file system gives an advantage to larger entities that have the capital to afford over-filing, at the expense of small inventors who may labor for years on an invention only to see it patented elsewhere. Possibly for this reason, the AIA mandates a series of reviews, with the first report regarding impact on small businesses, due on September 16, 2012, and an overall AIA implementation report due on September 16, 2015. It remains to be seen what impact that the AIA has on inventors and companies alike.

You may reach Jay at jpattumudi@aboutiplaw.com. For general inquiries regarding our services, please contact info@aboutiplaw.com.

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